UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA, INC., and AKORN INC. 1 Petitioners,. v. ALLERGAN, INC., Patent Owner. Case IPR (8,685,930 B2) Case IPR (8,629,111 B2) Case IPR (8,642,556 B2) Case IPR (8,633,162 B2) Case IPR (8,648,048 B2) Case IPR (9,248,191 B2) PATENT OWNER S SUPPLEMENTAL BRIEF ON LITIGATION WAIVER 1 Cases IPR and IPR , IPR and IPR , IPR and IPR , IPR and IPR , IPR and IPR , and IPR , have respectively been joined with the captioned proceedings. The word-for-word identical page is filed in each proceeding identified in the caption pursuant to the Board s Scheduling Order (Paper 10).

2 The Board s rulings in Ericsson Inc. v. Regents of the University of Minnesota, IPR (Paper 14) ( Ericsson ) and LSI Corp. v. Regents of the University of Minnesota, IPR (Paper 19) are wrongly decided. Immunity encompasses not merely whether [a sovereign] may be sued, but where it may be sued, even when multiple forums are available. Pennhurst State Sch. & Hosp. v. Halderman, 465 U.S. 89, 99 (1984). Mylan contends the IPR is the same as a mirror-image counterclaim, which in some circumstances, can be asserted against a tribe. When filing suit, a tribe does not waive immunity, even to compulsory counterclaims. Okla. Tax Comm n v. Citizen Band Potawatomi Indian Tribe of Okla., 498 U.S. 505, 509 (1991); United States v. U. S. Fid. & Guar. Co., 309 U.S. 506, 513 (1940) ( Possessing... immunity from direct suit, we are of the opinion [the Indian nations] possess a similar immunity from cross-suit. ). A mirror-image claim means exactly that matters that must be resolved and are presumed to be at issue in a case based on the claims of the tribe. Having placed a question before the court, a sovereign acknowledges the court s authority to resolve that question, whether in favor of the sovereign or in favor of a counterclaimant seeking the opposite resolution. Tohono O odham Nation v. Ducey, 174 F.Supp.3d 1194, 1204 (D. Az. 2016). A tribe s waiver of sovereign immunity may be limited to the issues necessary to decide the action brought by

3 the tribe; the waiver is not necessarily broad enough to encompass related matters, even if those matters arise from the same set of underlying facts. McClendon v. United States, 885 F.2d 627, 630 (9th Cir. 1989). This IPR does not fall within the mirror-image counterclaim exception. IPRs are not counterclaims. Ericsson at 8 n.4. Resolution of the district court case does not rely upon resolution of the IPR claims. EX An IPR is a separate proceeding that can be filed whether or not a district court action is filed, and it presents legal questions that are different than a counterclaim in the district court. Ericsson at 11. Thus, waiver cannot extend from one proceeding to another. Biomedical Patent Management Corp. v. California Dept. of Health Services, 505 F.3d 1328, (Fed. Cir 2007) (proceeding not continuous so as to apply waiver in each forum). And even if the two proceedings are related, there is a bright-line rule for tribes: [P]articipation in an administrative proceeding does not waive tribal immunity in an action filed by another party seeking review of the agency s decision. Kescoli v. Babbit, 101 F.3d 1304, 1310 (9th Cir. 1996); Quileute Indian Tribe v. Babbitt, 18 F.3d 1456, (9th Cir.1994). See also Contour Spa at the Hard Rock v. Seminole Tribe of Florida, 692 F.3d 1200, (11th Cir. 2012) (adhering to Potowatomi, rejecting application of Lapides to tribes); Bodi v. Shingle Springs Band of Miwok Indians, 832 F.3d 1011, 1017 (9th Cir. 2016) (same). Thus, the Board s Ericsson logic cannot apply here.

4 Dated: January 12, 2018 Respectfully submitted, /Alfonso Chan / Alfonso Chan Reg. No. 45,964 achan@shorechan.com Michael Shore* mshore@shorechan.com Christopher Evans* cevans@shorechan.com SHORE CHAN DEPUMPO LLP 901 Main Street, Suite 3300 Dallas, TX Tel: (214) Fax: (214) Marsha Schmidt* Attorney at Law Perrywood Drive Burtonsville, MD marsha@mkschmidtlaw.com Tel: (301) *admitted pro hac vice Attorneys for Saint Regis Mohawk Tribe

5 CERTIFICATE OF SERVICE Pursuant to 37 CFR 42.6(e)(4) and (b), the undersigned certifies that on January 12, 2018, a complete and entire copy of Patent Owner s Supplemental Brief on Litigation Waiver was provided, via electronic service, to the Petitioners by serving the correspondence address of record as follows: Steven W. Parmelee Michael T. Rosato Jad A. Mills 701 Fifth Avenue, Suite 5100 Seattle, WA sparmelee@wsgr.com mrosato@wsgr.com jmills@wsgr.com Wendy L. Devine One Market Street, Spear Tower Floor 33 San Francisco, CA wdevine@wsgr.com Douglas H. Carsten El Camino Real, Suite 200 San Diego, CA dcarsten@wsgr.com Richard Torczon 1700 K Street NW, 5 th Floor Washington, DC rtorczon@wsgr.com

6 Brandon M. White Crystal Canterbury Charles G. Curtis, Jr. Jennifer MacLean Benjamin S. Sharp Shannon M. Bloodworth PERKINS COIE LLP th Street NW Washington DC Eric D. Miller PERKINS COIE LLP 1201 Third Avenue, Suite 4900 Seattle, WA Counsel for Mylan Pharmaceuticals, Inc. And upon the remaining Petitioners as follows: Michael R. Dzwonczyk Azy S. Kokabi Travis B. Ribar SUGHRUE MION, PLLC 2100 Pennsylvania Ave., NW, Suite 800 Washington, DC Attorneys for Akorn Inc.

7 Gary J. Speier Mark D. Schuman CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN, P.A. 225 South Sixth Street, Suite 4200 Minneapolis, MN Attorneys for Teva Pharmaceuticals /Alfonso G. Chan/ Alfonso G. Chan SHORE CHAN DEPUMPO LLP 901 Main Street, Suite 3300 Dallas, Texas (214)